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IP Bulletin, November 2009

New Examiner Count System Will Change Processing of RCEs United States Patent and Trademark Office (USPTO) Director David Kappos recently announced changes to the examiner count system that will likely impact examination time frames for requests for continued examination (RCE). Any RCE filed on or after November 15, 2009 will be subject to the new procedural rules that will likely lead to a longer examination process for RCEs. Before this change, RCEs were placed on an examiner’s “amended docket,” which required examiners to act on a RCE within two months of the filing of the request. RCEs will now be placed on an examiner’s “Special New” docket, along with divisional applications, continuation applications, and applications accorded special status. This change is said to “allow examiners greater flexibility in managing their workload and allocating their time among requests for continued examination and new applications.” The “greater flexibility” will undoubtedly lead to a longer examination process following the filing of a RCE.

In Re Lister: U.S. Copyright Registration Found To Be Not Publicly Accessible Adding to the litany of cases related to when a document is considered publicly accessible for prior art purposes, the Federal Circuit recently held that a manuscript registered with the United States Copyright Office was not publicly accessible because the examiner was unable to provide sufficient evidence that the manuscript was both published and reasonably locatable more than a year before the filing date of the patent application. In doing so, Dr. Lister’s more than 13 years of patent prosecution related to a method of playing golf continues.

BPAI Projects Increased Delays in the Appeal ProcessThe USPTO recently released the statistics of the Board of Patent Appeals and Interferences (BPAI) for the fiscal year ending September 30, 2009. Of the 6,800 appeals disposed of in FY2009, the examiner’s rejection was wholly affirmed in slightly more than 50% of cases, affirmed-in-part in 14% of cases, and wholly reversed in 25% of cases. Additionally, more than 15,300 new appeals were filed during FY2009. This represents an increase of more than 140% over the appeals filed in FY2008, bloating the backlog of pending appeals to almost 12,500, with an average pendency of 8 months. Because the current hiring freeze at the USPTO is hampering efforts to bring in additional Administrative Patent Judges, the BPAI projects that the backlog could approach more than 21,500 cases, with an average pendency of 14 months, by the end of FY2010. Given that applicants and examiners typically brief an appeal for about 11 months before the case even appears on the BPAI docket, applicants could soon be waiting on average more than two years after filing a notice of appeal to have their appeal resolved.

Supreme Court Justice Sotomayor’s Intellectual Property RecordJustice Sonia Sotomayor begins her tenure as a U.S. Supreme Court Justice with a history relatively rich in experience with Intellectual Property (“IP”) issues. This experience stems from her time as a judge for the U.S. Court of Appeals for the 2nd Circuit and for the U.S. District Court for the Southern District of New York. She also practiced as an IP litigator for eight years with the New York law firm Pavia & Harcourt. While it is uncertain how many IP-related cases Justice Sotomayor will hear while seated on the Supreme Court and how she will decide such cases, it should be beneficial to the IP community to have a Justice versed in IP cases as a lower court judge and, unique to the Court, as a practitioner.

USPTO Expands First Action Interview ProgramThe USPTO recently announced that it is expanding the First Action Interview Pilot Program to additional art units. It will also be modifying the procedures under the program in an attempt to enhance efficiency and offer more options to participants. Under the program, participants receive a Pre-Interview Communication containing the results of a prior art search performed by the examiner. In response to this communication, applicants can conduct an interview with the examiner to discuss the results of the search and its impact on the claims. One important change in the so-called “enhanced” program will allow participants to waive the interview after receipt of the prior art search and receive a first Office action as under normal prosecution. In the original program, participants who failed to respond to the Pre-Interview Communication or failed to conduct the interview in a timely manner would risk abandonment of the application.

For a list of the eligibility requirements for the expanded program, click here.

Method Claim Drafting Strategies in Light of Federal Circuit OpinionsIn drafting method claims, various Federal Circuit opinions highlight that it is important to consider whether all of the steps of the claim can be performed by a single potential infringer. Claims in which the steps are performed by different parties are effectively only enforceable in the limited situation where multiple parties acting under common direction or control combine to perform the claim. Thus, where more than one potential class or type of infringer may exist, separate claims targeted to each one should be pursued. This strategy can help avoid situations where multiple parties are able to perform the patented method, yet escape liability.

Recent Changes to the European Patent ConventionThe European Patent Convention (“EPC 2000”) came into effect on December 13, 2007 and represents the most significant change in European patent law since the European Patent Convention was first introduced in 1977. Recently, significant changes were made to the fee structure within EPC 2000. These changes apply to applications filed after April 1, 2009 and International Applications (PCT) which enter the European regional phase after that date. Applicants and practitioners should be aware of some of the important changes when considering their European filing strategy.

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. Assistance in the preparation of this issue was provided by Rory P. Pheiffer and Michael P. Visconti. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

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